WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Putzmeister Holding GmbH v. John Mai

Case No. D2019-2305

1. The Parties

The Complainant is Putzmeister Holding GmbH, Germany, represented by von Briesen & Roper, s.c., United States of America (“United States”).

The Respondent is John Mai, United States.

2. The Domain Name and Registrar

The disputed domain name <putzmiester.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 20, 2019. On September 23, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 24, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 25, 2019, providing the registrant and contact information disclosed by the Registrar, and requiring the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on September 25, 2019.

The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 27, 2019. In accordance with the Rules, paragraph 5, the due date for Response was October 17, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 18, 2019.

The Center appointed Christiane Féral-Schuhl as the sole panelist in this matter on October 25, 2019. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant is Putzmeister Holding GmbH, a German company that presents itself on its website as one of the global leader in the world of construction and mining since 1958. On this website, the Complainant states that its activity consists in developing, producing, selling and serving its customers “with high quality and high reliability machines for pumping, distributing and placing concrete, mortar and high density solids, and for preparing, temporarily storing, processing and transporting these materials”.

The Complainant is the owner of the following trademark registrations:

- United States figurative trademark PUTZMEISTER No. 998,695 registered on November 19, 1974 in class 23;
- United States word trademark PUTZMEISTER No. 2,479,279 registered on August 21, 2001 in classes 13, 19, 21, 23, 31, 34 and 35;
- United States word trademark PUTZMEISTER No. 4,705,673 registered on March 24, 2015 in classes 6, 7, 9, 12, 17 and 19.

The disputed domain name <putzmiester.com> was registered on March 25, 2019 and points to an error page. The Respondent has been using the disputed domain name to send email scams.

5. Parties’ Contentions

A. Complainant

In accordance with paragraph 3(b)(ix) of the Rules, the legal and factual elements on which the Complainant relies are set out below.

First of all, the Complainant asserts that the disputed domain name is confusingly similar to prior trademarks of the Complainant, pointing out that the disputed domain name merely swaps the “i” with the “e” in the middle of the trademark.

The Complainant considers that the disputed domain name is an example of confusing similarity and/or virtual identity brought about through easily made typing errors made by Internet users, this misspelling being a common one.

Thus, the Complainant argues that the Respondent is engaged in “typosquatting”.

Secondly, the Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name, since there is no evidence that the Respondent has used or is preparing to use the disputed domain name in connection with a bona fide offering of goods or services, nor that the Respondent has ever been commonly known by the disputed domain name.

Thirdly, the Complainant claims that the disputed domain name was registered and is being used in bad faith, since the practice of typosquatting is presumptive evidence of bad faith registration.

The Complainant highlights the circumstances in which the disputed domain name was registered: employees of the Complainant were in the middle of a sale transaction that was taking place largely over mail. The Complainant believes that the Respondent compromised either the Complainant’s email or the Complainant’s interlocutor’s email or both, since after the sale was made, the Respondent registered the disputed domain name and then sent an email from the disputed domain name with instructions to wire to the Respondent the payment corresponding to the sale.

The Complainant thus asserts that the Respondent used the disputed domain name in order to impersonate the Complainant and fraudulently solicit payment from the Complainant’s interlocutor, this practice constituting an email scam and having previously been found to be sufficient to establish bad faith in registration and use of a disputed domain name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of the disputed domain name,
the Complainant shall prove the following three elements:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

According to the Policy, paragraph 4(a)(i), the Complainant shall prove that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

First of all, the Panel finds that the Complainant has provided evidence that it has rights on the PUTZMEISTER trademark.

Then, the Panel notices that the disputed domain name is composed of (i) the distinctive element “putzmiester”, which differs from the PUTZMEISTER trademark only by the inversion of the letters “i” and “e” in the middle of the name, (ii) the generic Top-Level Domain (“gTLD”) “.com”.

The applicable gTLD in a domain name is viewed as a standard registration requirement and as such is disregarded for the purpose of determining whether a domain name is identical or confusingly similar to a trademark.

The Panel wishes to remind that the first element of the UDRP serves essentially as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the domain name. This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the domain name. In cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of the UDRP (See section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDPR Questions, Third Edition (“WIPO Overview 3.0”)).

Furthermore, the Panel concurs with the opinion of several prior UDRP panels which have recognized as “confusing similar” and/or “virtually identical” the use of terms that are a slight variation from a registered mark, consisting for example of the inversion of two letters which does not significantly affect the appearance or pronunciation of the disputed domain name, this conduct being commonly referred to as “typosquatting”, and which have considered that “essential” or “virtual” identity is sufficient for the purpose of the Policy (see, e.g., Schneider Electric S.A. v. Domain Whois Protect Service / Cyber Domain Services Pvt. Ltd., WIPO Case No. D2015-2333; Humana Inc. v. Cayman Trademark Trust, WIPO Case No. D2006-0073; Edmunds.com, Inc. v. Digi Real Estate Foundation, WIPO Case No. D2006-1043).

Regarding the disputed domain name, the Panel finds that the inversion of the letters “i” and “e” in the middle of the PUTZMEISTER trademark is not sufficient to exclude confusing similarity.

Therefore, the Panel holds that the Complainant has established the first element of paragraph 4(a) of the Policy and that the disputed domain name is confusingly similar to the Complainant’s trademarks.

B. Rights or Legitimate Interests

According to the Policy, paragraph 4(a)(ii), the Complainant shall demonstrate that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

The Policy, paragraph 4(c), outlines circumstances that if found by the Panel to be proved shall demonstrate the Respondent’s rights or legitimate interests in the disputed domain name.

These circumstances are:

(i) before any notice of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or

(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

According to prior UDRP panel decisions, it is sufficient that the complainant shows prima facie that the respondent lacks rights or legitimate interests in the disputed domain name in order to shift the burden of production to the Respondent (see Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).

Indeed, while the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out prima facie that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element (see section 2.1 of the WIPO Overview 3.0).

According to the Panel, the Complainant has shown prima facie that the Respondent has no rights or legitimate interests in respect of the disputed domain name, nor that the Respondent has ever been commonly known by the disputed domain name.

Moreover, the disputed domain name resolves to an error page but has been used to perpetrate an email scam, which does definitely not represent a bona fide offering of goods or services.

Therefore, the Panel considers that the Respondent does not have rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

According to the Policy, paragraph 4(a)(iii), the Complainant shall prove that the disputed domain name has been registered and are being used in bad faith.

Thus, paragraph 4(b) provides that any one of the following non-exclusive scenarios constitutes evidence of a respondent’s bad faith:

(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location.

First of all, the Panel finds that it is established that the Complainant’s trademarks were registered before the registration of the disputed domain name.

Moreover, according to prior UDRP panel decisions, typosquatting tends to induce an intention on the part of the Respondent to confuse Internet users seeking or expecting the Complainant, which is a demonstration of bad faith registration and use (see again, e.g., Humana Inc. v. Cayman Trademark Trust, WIPO Case No. D2006-0073; Edmunds.com, Inc. v. Digi Real Estate Foundation, WIPO Case No. D2006-1043).

Indeed, the Panel finds that the Respondent knew, or should have known, that its registration would be confusingly similar to the Complainant's trademark, given that the PUTZMEISTER trademark is not generic and that the Respondent registered a very slight variation of this term by a simple inversion of the letters “i” and “e” (typosquatting), and also given the use the Respondent made of the disputed domain name (email scam).

Furthermore, the circumstances in which the disputed domain name was registered and has been used in an email scam proves the intention of the Respondent to impersonate the Complainant in order to fraudulently obtain payment from the Complainant’s interlocutor in the course of a sale transaction between the Complainant and its interlocutor.

Consequently, in view of all the circumstances of this case, the Panel finds that the disputed domain name has been registered and is being used in bad faith according to Policy, paragraph 4(a)(iii).

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <putzmiester.com> be transferred to the Complainant.

Christiane Féral-Schuhl
Sole Panelist
Date: November 8, 2019